What is a Trade Mark?

A trade mark is a sign capable of distinguishing the goods or services of one trader from those of other traders.

What is the procedure for applying for a trade mark?

Applicants are required to complete the Application Form (TM-No. 2) in duplicate on size A4 paper and submit the form at the Receiving Office of the Intellectual Property Office together with the application fee. Seven additional copies of the trade mark are also required where the mark is stylized or includes a logo. Where the application is being filed by an agent on behalf of the applicant a Form TM No. 1 must also be completed.

Is the application form available online?

What information do I need to complete a trade mark application form?

Applicant’s name and address;

Applicant’s nationality or state of establishment and the legal nature of the legal entity (if a company);

List of the goods and/or services in relation to which the mark will be registered in accordance with the International Classification of Goods and Services (International Classification of Goods and Services for the Purposes of the Registration of Marks under the Nice Agreement (7th Edition));

Copy of the trade mark.

What is the cost of filing a trade mark application?

The filing fee is determined by the number of classes for which the application is filed. That is, each application costs $300.00 for the first class of goods and/or services and $100.00 for each additional class included in the same application.

How long will it take for a mark to be registered?

Registration is not automatic upon the filing of an application. There are several stages in the application process including a search for prior rights, substantive examination and the publication of the mark in a daily newspaper if it is accepted for registration. It takes approximately nine to twelve months for a mark to be registered provided that there are no objections to the application by the Office or a third party.

When I file an application at the Intellectual Property Office, what happens next?

When a trade mark application is filed it goes through the following process: –

Formality Examination

Examination of the International Classification of Goods and Services for the Purposes of the Registration of Marks under the Nice Agreement (7th Edition)

Search for Prior Rights

Similarity Search

Determination of Registrability

Publication/Opposition period

Registration (if no opposition)

You may contact the Office to determine the status of your application.

How long is a trade mark valid for?

A trade mark is valid for ten years from the filing date of the application and may be renewed for successive ten year periods upon the filing of the prescribed renewal application form and the payment of the prescribed fee.

What is meant by claiming of priority?

The right of priority is an applicant’s right under the Paris Convention for the Protection of Industrial Property to benefit from an earlier filing date, if the application in Trinidad and Tobago, is filed within six months of the date of the first filing of the application in another Paris Convention country.

Can I apply for my trade mark electronically?

No. Currently under the Trade Marks Act and Rules this is not permitted.

Can I apply for my trade mark by facsimile?

Yes. Under Rule 6 of the Trade mark Rules and Regulations this is permitted. However you must submit the original application within one month of the date of the facsimile transmission.

Is the trade mark registration protection valid internationally?

A trade mark registered in Trinidad and Tobago is only valid within Trinidad and Tobago.

Can I apply for a trade mark myself or do I have to retain an Attorney?

You may apply for the trade mark yourself provided that you possess an address within Trinidad and Tobago for the service of all documents from the Office. Applicants located within Trinidad and Tobago can apply for a trade mark themselves or through an agent. However, applicants located outside of Trinidad and Tobago are required to submit an address for service in Trinidad and Tobago with their application and therefore will need a local agent.

Is the Intellectual Property Office the only office in Trinidad and Tobago where I can apply for my trade mark?

Yes. The Intellectual Property Office is the office assigned with the responsibility for the registration of trade marks in Trinidad and Tobago.

Why should I apply to register my trade marks and what are the benefits?

Registering your trade mark gives you the exclusive right to use your mark for the goods and/or services that it covers in Trinidad and Tobago.

A registered trade mark: –

Allows you to initiate legal proceedings for the infringement of your trade mark under the Trade Marks Act, Chap. 82:81;

Allows the proprietor of the mark to have documentary proof of its ownership of the mark;

Is personal property, which may be sold, licensed or franchised;

May prevent unauthorized persons or entities from using your trade mark without your permission;

Gives public notice of the registered proprietor of the mark and authorized users of the mark may be recorded in the Trade Marks Register.

How would I be informed when the application has been processed?

Applicants or their agents are informed of decisions via mail or facsimile (if number provided).

During what hours is the Office open to the public?

The Office is open to the public from Monday to Friday (except public holidays) from 8:30 a.m. to 4:00 p.m.

What are the methods of payment?

Cash at any District Revenue Office. Please note that in order to make payments at any District Revenue Office, the applicant must obtain a voucher first from the Cashier at the Intellectual Property Office before proceeding to any District Revenue Office. The receipt from the District Revenue Office must be presented to the Intellectual Property Office after payment of the fee at any District Revenue Office.

May I conduct a search for registered or pending trade marks?

Yes. Applicants may search the Trade Mark Index Books free of charge and request the Trade Marks Register (for registered marks) or the pending summary sheet (for pending applications) at a cost of $20.00 per trade mark. All fees are quoted in Trinidad and Tobago Dollars.